Strategic Advocacy for Trademark, Branding and Counterfeit Disputes – Toronto Trademark Infringement Litigation Lawyers

Lawyers at Gilbertson Davis LLP have acted for and represented owners, licensees, and defendants in actions relating to copyright infringement, trade-mark infringement, passing off, and disclosure of confidential information.

As an owner or licensee, your intellectual property is of paramount importance to the value and growth of your business. Whether it is your publically-recognized trade-marks or your closely-protected trade secrets, these carry immense value that can be significantly tarnished if not promptly and thoroughly protected.

Trade-mark Infringement and Passing Off

In the modern economy, the importance of a brand cannot be understated, and for many businesses their trade-marks can be one of the most valuable assets of the company. However, trade-marks can only retain their value if they are not used or mimicked by competitors or associated with another business that might depreciate the goodwill developed in that mark. That is why it is important to protect your trade-mark rights through prompt and effective enforcement proceedings.

The Trademarks Opposition Board – Opposition Hearings

The Trademarks Opposition Board, the body authorized to act on behalf of the Registrar of Trademarks, is responsible for determining proceedings against trademarks, whether brought to oppose an application to register a trademark or to expunge an unused trademark from the registry.  Opposition proceedings must be initiated within two months of the advertisement of the application in the Trademarks Journal, unless a time extension is obtained from the Registrar.  The proceedings progress through three stages.  First, the opponent initiates the process by providing a detailed statement of opposition to the Registrar, who either rejects the statement of opposition or forwards it to the applicant for response.  Next, the parties enter the evidentiary stage where each party may file supporting documents.  Finally, the parties are allowed to make arguments through written submissions and an oral hearing.

The Act enumerates four grounds upon which a statement of opposition may be sustained:

(1) the application did not conform to application requirements;
(2) the trademark is not registrable;
(3) the applicant is not the person entitled to registration of the trademark; or
(4) the trademark is not distinctive.

The opponent cannot circumvent the statutory authority of the Registrar by initiating a proceeding before federal courts.  Conversely, an opponent cannot challenge an existing registration of trademark through opposition proceedings before the TMOB but must oppose existing registrations through federal courts.  However, the final decisions of the TMOB are appealable as a matter of right to the Federal Court.  Although only final decisions of the TMOB can form the basis for an appeal, all decisions of the Registrar are reviewable by the Federal Court.

Copyright Infringement

Copyright can subsist in any almost any original written or dramatic work that requires skill and judgment to create. As a content creator you are granted the exclusive right to publish, reproduce, license, adapt, and present that work, subject only to certain “fair use” or “fair dealing” exceptions. We can advise you on your options for enforcing or defending copyright infringement claims to protect your interests.

Trade Secrets

The success of many businesses can be attributed to unique and confidential formulas, recipes, or methods that provide a competitive advantage over competitors. That advantage can be quickly lost if those secrets to success are disclosed to competitors, whether by current or former employees or by other business partners, directors, and officers who may attempt to compete using that information. It is important that your trade secrets are properly protected and, should they be disclosed or used without your permission, that you obtain prompt and effective legal representation to minimize your risks and re-establish that competitive advantage.


At Gilbertson Davis LLP, we recognize the importance of your intellectual property, and the need to quickly enforce your rights. We assist our clients in protecting their intellectual property assets through prompt and results-oriented litigation strategies, including injunctive and other urgent relief, even in situations where the infringement is done anonymously over the internet. Gilbertson Davis LLP can serve your needs with lawyers who are experienced in acting and representing clients in both the Ontario Superior Court of Justice and the Federal Court in such matters.

Contact us for an initial consultation.

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